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Amendments to the Grace Period in Taiwan for Novelty and Inventive Step

On May 1, 2017, an amendment to the Taiwanese Patent Act became effective for all new patent applications filed on this date.In addition, in conjunction with the amendments to the Patent Act, the Enforcement Rules of the Patent Act were likewise amended.

Under the Taiwanese Patent Act, the requirements of novelty and inventive step for invention and utility model patent applications as well as design patent applications is governed by Articles 22 (applicable to invention and utility model applications) and 122 (applicable to design applications).

Prior to May 1st, a grace period in Taiwan was only available for very limited numbers and types of public disclosures.These public disclosures were those when the invention was:

a)Disclosed publicly for experimental purposes;

b)Published in a printed publication;

c)Displayed at an exhibition sponsored or recognized by the Government; or

d)Disclosed without the consent or against the consent of the applicant.

Additionally, applicants wishing to claim advantage of the grace period had to comply with a number of formal requirements, including:

a)Filing a patent application in Taiwan six months from the date of occurrence of any of the above described public disclosures;

b)Making a declaration at the time of filing describing the public disclosure as well as providing the year/month/date in which the disclosure occurred; and

c)Submitting an evidentiary document at the time of filing or within a time period specified by the Patent Office providing the existence of the disclosure.

The amendments that became effective on May 1st provide good news for most patent applicants.Specifically, first and foremost, the amendments extend the grace period for filing an invention or utility model patent application from six to twelve months from the date of occurrence of the public disclosure.Unfortunately, for design patent applications, the grace period remains unchanged, namely, six months from the date of public disclosure.Second, the amendments expanded the scope of the categories of public disclosure for which the grace period can be claimed.For example, speaking at a conference, publication of an invention in a product catalog, a poster presentation and disclosure in a public forum or on the internet can all be claimed under the grace period. However, there is one exception.Specifically, the grace period cannot be claimed when the public disclosure is the publication of an issued patent or application that is filed by the applicant or with the applicant’s consent.Said another way, the grace period is not available if the public disclosure is the publication of an issued patent or published application resulting from the “intent” of the application.However, the exception does not apply if an issued patent or application published contrary to the inventor’s intent, such as when a patent application is misappropriated or stolen by another person.If the public disclosure is due to a misunderstanding or negligence, the public disclosure is also deemed against applicant’s intention.For example, when an applicant understands the party receiving the disclosed information is under confidentiality obligations but later learns that that understanding is not correct.

This post was written by Lisa Mueller and Kate Shu-Yin Chu from Lee and Li.

The Trans-Pacific Partnership (TPP) is a trade agreement between twelve Pacific Rim countries concerning various matters of economic policy. The parties to the TPP include the United States, Mexico, Japan, Canada, Australia, Malaysia, Chile, Singapore, Peru, Vietnam, New Zealand and Brunei Darussalam. Agreement between the parties on the TPP was reached on October 5, 2015, after nearly seven years of negotiations. It is believed that once the agreement is ratified by each country’s congress or parliament (which is expected in early 2016), that the accord will become the most significant, economically-impactful trade deal in history.

On October 9, 2015, WikiLeaks released the final “agreed” version of the TPP chapter on intellectual property rights. According to the document released, a final “legal scrub” of the document is all that remains as negotiations between the parties have been completed. We, at the BRIC Wall Blog, thought it would be interesting in the next several posts to examine certain of the patent and pharmaceutical/regulated product sections of this chapter. We look forward to receiving comments on these sections.

Patentable Subject Matter

Article QQ.E.1 of the chapter discusses patent eligible subject matter. According to this Article, subject to certain exclusions, each party “shall” make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves inventive step, and is capable of industrial application. Additionally, each party agrees that patents are available in their country for new uses, methods or processes of using a known product.

The following may be excluded from patentability:

Inventions, the commercial exploitation of which are contrary to public order or morality, or the prevention of which is necessary to protect human, animal or plant life or health or to avoid serious prejudice to nature or the environment (provided that such exclusion is not made merely because the exploitation is prohibited by their law).

Diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.

Animals other than microorganisms.

Essentially biological processes or the production of plants or animals, other than non-biological and microbiological processes.

Plants other than microorganisms (although each party confirmed that patents are available at least for inventions derived from plants).

In general, there is not much in this chapter that stands out as a providing any significant change or departure from any of the patent laws of the 12 countries.

Grace Periods

Article QQ.E.2 of the chapter discusses a grace period for public disclosures prior to the filing of a patent application. Specifically, according to this Article, information contained in public disclosures “shall” be disregarded for purposes of determining novelty or inventive step if the public disclosure:

Was made by the patent applicant or by a person who obtained the information directly or indirectly from the patent application; and

Occurred within 12 months prior to the date of filing of the application in the territory (of the party).

This chapter provides some uniformity with respect to the grace period for each of the parties. Although a 12 month grace period was already provided by the laws of most of the 12 countries, this article provides an increase over the 6 months provided under the laws of Japan and New Zealand (which provides a grace period of 6 or 12 months depending on the circumstances).